Published on March 21, 2009
Posted in: Blog
A brief stroll through the aisles of any major retailer will confirm the truism that, in most developed economies, the decision to purchase even the most common of consumer staples can often involve choosing from a dizzying array of competing products, many of which share similar characteristics. In a world where consumers can choose among 20 or 30 or more different types of breakfast cereals or toothpastes or shampoos etc., brand differentiation is often a key determinant in the success of a product (or a service). Trade marks are a critical component of the brand differentiation process. They are also enormously valuable assets of most successful businesses.
Because trade marks can be such valuable business assets, great care should be taken in selecting them. Another reason why great care should be taken in selecting a trade mark is that, while registration of a trade mark in Canada confers on the trade mark owner the exclusive right to use the registered trade mark throughout Canada, the trade mark owner is ultimately responsible – both legally and financially – for enforcing that monopoly right.
Ideal trade marks therefore tend to exhibit two qualities: first, they’re highly successful in serving their primary business purpose of effectively differentiating the goods or services of their owners from those of their competitors; and, second, there’s a high probability that their value as intellectual property can be legally protected. Both of the above qualities are possessed by trade marks that have a high degree of inherent distinctiveness.
Trade marks with a high degree of inherent distinctiveness are considered “strong” trade marks. In general, “strong” trade marks have either no inherent meaning of any kind, or no meaning in relation to the goods or services with which they’re associated. Invented (or “coined”) words are an example of “strong” trade marks that have no inherent meaning. Familiar examples include TYLENOL (for pain killers and cold preparations), KODAK (for photographic film), REEBOK (for shoes), EXXON (for gasoline) and CLOROX (for laundry detergent). Common dictionary words, however, can also be “strong” trade marks if their use in relation to the goods or services with which they are associated is arbitrary and uncommon. Familiar examples include APPLE (for computers and software), CAMEL (for cigarettes), AMAZON (for online book-retailing services), and DUTCH BOY (for paints). The high degree of inherent distinctiveness of “strong” trade marks makes them relatively easy to protect since the intent of a competitor to encroach on the brand recognition that’s been widely established in the marketplace by a “strong” trade mark can usually be readily inferred.
Suggestive trade marks occupy a middleground in the “distinctiveness” spectrum (and similarly occupy a middle-ground between “strong” and “weak” trade marks). Suggestive trade marks “suggest” some character or quality of their associated goods or services, or the result of their use. Suggestive trade marks require consumers to guess at the connection between the trade mark and its associated goods or services. COPPERTONE, for example, suggests the tanning result that can be achieved through the use of its associated suntan lotion; GREYHOUND suggests the speed of its associated bus transportation services; while ROACH MOTEL suggests the deadly “accommodations” that will be provided to pests by its associated pest control products.
Trade marks with little to no inherent distinctiveness are considered “weak” trade marks. The most common characteristic of “weak” trade marks is that they consist of words in common usage that are descriptive, to some greater or lesser degree, of some quality or characteristic of the goods or services with which they are associated (e.g., SIMPLY PURE WATER). Laudatory prefixes (“premium”) or descriptive words (“builders”) often make up one or more (“premium builders”) of the components of a descriptive trade mark. If a prospective trade mark is so highly descriptive of its associated goods or services (or of their dominant quality or characteristic) that registration of the trade mark may be in doubt, then the trade mark should not be selected since, even if registered, it would likely be very difficult to prevent competitors from using very similar trade marks. The case law clearly establishes that competitors will be permitted to use similar descriptive trade marks simply by rearranging the order of the descriptive word components or by introducing additional components as part of their trade mark. (There are, for example, literally dozens of trade marks that have been registered in Canada that include the descriptive word “donuts” as a component of the trade mark.) A trade mark that consists entirely of descriptive words in common usage can only be registered if it can be proven that those words have acquired “secondary meaning” through extensive commercial use by the would-be owner of the registered trade mark.
As noted above, in general, the best trade marks are those that possess a high degree of inherent distinctiveness. Therefore, on a scale from best-to-worst, invented or arbitrary words are more ideal trade marks than suggestive words, while suggestive words are to be preferred over highly descriptive words. In the real world, the trade mark selection process is not always so clear cut. COCA-COLA, for example, which is perennially near the top of any list of the world’s most recognizable trade marks, is a descriptive trade mark that became one of the world’s “strongest” and most distinctive trade marks as a result of decades of extensive use. For the average owner/managed business, however, with a limited marketing budget, perhaps the simplest lesson to be drawn from the above legal principles is that highly descriptive trade marks should be “weeded out” early in the trade mark selection process, preferably long before they’re adopted for public use. Because of their low degree of inherent distinctiveness, highly descriptive trade marks are neither effective in distinguishing the goods or services that are associated with them nor is the value of any goodwill that’s created in them capable of any significant measure of legal protection.